Patent Attorney

Patent Lawyer before the Courts

If a patent, design or trademark has been granted, or if there are other intellectual property rights, for example copyright, enforcing the rights requires a lawyer who deals with intellectual property. Our firm has lawyers, and lawyers who are also patent attorneys, who act to enforce the rights of patent holders.
First, in appropriate cases, a warning letter can be sent to whoever is infringing the patent or other intellectual property right. Sometimes the warning letter is enough, and in this case it is sometimes necessary, in addition to the warning letter, to draft an agreement with an undertaking by the infringer.
If the warning letter is not sufficient, we file a claim with the court. Sometimes the claim is accompanied by a request for an injunction already when the claim is filed, in addition to the monetary compensation requested and other remedies.
Our firm handles the filing of claims against infringers, and also defends defendants against whom infringement claims are filed, sometimes without any justification.

Patent Lawyer and the Drafting of Various Documents and Agreements

In addition to patent and intellectual property registration proceedings, our firm prepares various agreements and documents that are important to the company, the inventor and the entrepreneur, in order to maximize protection and reduce the legal risks that may arise in the entrepreneurial process.
After drafting agreements, we support our clients with advice on implementing the agreement. We serve as legal advisors to various companies, and prepare protocols and various documents on an ongoing basis.
Sometimes, after an agreement is signed between an inventor and an investor, there is a need to form a company, and we support the formation of the company.

Patent Attorney Expert Opinion for the Court

Our firm has a patent attorney who provides expert opinions to the court on the question of infringement or non infringement of a patent or other intellectual property rights.
In addition, we provide opinions to lawyers who do not practice in the field of intellectual property, as well as to our clients, on the question of infringement or non infringement of a patent or other intellectual property.
Drafting a legal opinion requires experience and knowledge in both the legal and the technical aspects. Our firm has technical consultants who work closely with the patent attorney to assist and examine the technical aspects of the opinion.

Patent Registration by a Patent Attorney: How Do You Start?
Contact us for an introductory meeting at no cost. We charge a fee only if we begin work and consultation. Meetings can also be held remotely. Sometimes you will first sit in our office with the technical team to explain the technical side of the invention, and only then will the legal team begin its work.

The Patent Registration Process
The patent registration process is carried out in accordance with the Patents Law and the Patents Regulations. It is therefore advisable to use the services of a lawyer and a patent attorney to draft the patent application and throughout the filing and examination process. It is also advisable to involve a technical team in the drawings section, and to receive technical information in order to broaden the scope of protection and the various options and alternatives.
The Patents Law defines what an invention eligible for a patent is. Among the various conditions, two are among the most important, and must be met after examination by a patent examiner of the Israel Patent Office or of the patent authorities and offices outside of Israel, depending on the place of filing.
One condition is novelty and the second condition is inventive step. Many inventors do not understand these conditions, and it is advisable to know what they mean.

Novelty in the Patent Registration Process at the Patent Office
The Patents Law, 5727-1967 (yes, the Patents Law in Israel is from 1967), defines the matter of novelty in Section 4. A new invention: what is it?
An invention is considered to be new if it has not been published, whether in Israel or abroad, before the application date –
(1) by way of description, in writing, visually, orally or in any other manner, so that a person skilled in the art can carry it out according to the details of the description;
(2) by way of exploitation or display, so that a person skilled in the art can carry it out according to the details that became known in this way.
In other words, the examination refers to a prior publication before the filing date and specifies the details. Case law and the courts have of course interpreted the law, and patent examiners check, when examining a patent application, whether the invention is novel or not.
Inventive Step in the Patent Registration Process at the Patent Office
The Patents Law defines inventive step in Section 5. What is an inventive step?
An inventive step is a step that does not appear to be obvious to an average person skilled in the art on the basis of the knowledge already published, before the application date, in the ways mentioned in Section 4.
Case law and the courts have interpreted the law, and patent examiners examine the application during the examination process accordingly.

An Examination Report that Does Not Grant a Patent, and a Response by an Attorney / Patent Attorney
In many cases, in the first, second and further examination reports, the patent examiners do not issue a notice before acceptance, i.e. they do not grant a patent. The attorneys and patent attorneys at our firm prepare a response to the examination report and prove and argue claims supported by the case law of the Registrar of Patents and of the courts in Israel and abroad regarding the eligibility of the invention for a patent.
In many cases we succeed in convincing the examiner of our arguments, both by drafting and amending the claims and on the basis of case law, with examiners both in Israel and abroad.
However, if despite the arguments the examiner does not grant a patent and refuses to grant a patent, in appropriate cases it is possible to file an appeal to the Registrar of Patents, before the Registrar of Patents’ tribunal, and in exceptional cases it is also possible to appeal the Registrar’s decision in court. Our legal team, attorney and patent attorney, handles these proceedings before the authorities in Israel and abroad through a network of licensed consultants in the various countries.

Using the Paris Convention and the PCT to Defer Costs and Build a Patent Registration Strategy
Informed use of intellectual property treaties in the patent registration process allows the applicant to defer the costs of patent registration. In this way, it is possible to build a patent registration strategy suited to the invention and to the characteristics and needs of the inventor and the owner of the patent application.
Deferring the costs and expenses of patent registration allows the inventor to raise capital and advance technically and commercially, without incurring immediate expenses, while preserving the priority date of the invention in the countries that are signatories to the treaty.

The Paris Convention for an Applicant Working with a Patent Attorney
After a patent attorney drafts a patent, the applicant needs to decide where to file the draft, known as the patent specification. Applications can be filed immediately at patent offices around the world, but filings can be postponed by using the Paris Convention.
The Paris Convention, to which some 175 countries are signatories, allows the patent applicant to file a patent application or a provisional application in one of the Convention countries and pay only one fee, without the need to file in all countries, while the priority date is preserved for the owner of the invention in all of the countries that are signatories to the Convention.
In other words, applicant John filed a patent application in Israel and paid a patent registration fee only in Israel. Before the end of the year, he can file a follow-up application in one or more of the Convention countries and receive the Israeli date when he files outside of Israel. That is, if another person filed a patent on the invention, and our Israeli applicant John files a parallel application before the end of the year, even though the Israeli applicant filed at a later date in that country, he will still be entitled to priority, since he will claim recognition of the Israeli priority date for the application filed outside of Israel.

The PCT: International Applications at the Patent Authorities
Before the end of the year from the first filing date, it is possible to postpone filings by approximately another year and a half, i.e. 30 months from the priority date, which is the date of the first application, by using the PCT.
An application under the PCT is an application at the patent authorities and it is international, but it is not a patent. In other words, the examiner of the international application has no right to grant a patent certificate; rather, an examination is carried out that provides an opinion which is not binding on the various examiners at the various patent offices around the world.
The advantage of this application is that the applicant can postpone the expenses of filing patents in various countries by another year and a half, and also receive a search and an opinion from the international patent examiner.

Transfer of Ownership by Virtue of an Agreement, by an Attorney / Patent Attorney
Transferring ownership of a patent registration application or of a registered patent requires the preparation of an agreement that transfers the rights. It is advisable that a lawyer draft an agreement to be signed between the rights holder and the new owner of the patent registration application or the registered patent. Indeed, it is possible to file a request to record a transfer of ownership even before the registered patent is granted. Sometimes inventors carry out transactions, for example with investors, or companies carry out transactions before a registered patent is granted. It is important that such an agreement be drafted correctly and include the rights expressed in the patent application as well as other rights.

Owner of an Invention or Owner of a Patent?
Inventors sometimes do not distinguish between the owner of an invention and the owner of a patent, and it is therefore important to consult an attorney or a patent attorney on this matter. When rights are transferred, or when a person working for a company invents an invention, there is a lack of understanding among inventors as to whom the rights belong.
Section 1 of the Patents Law defines these legal terms:
“Owner of an invention” – the inventor himself or his successors, being whoever is entitled to the invention by law, by transfer or by agreement;
“Owner of a patent” – the person registered in the Register as the person to whom the patent was granted or to whom ownership of the patent was transferred;

Laws and regulations vary from country to country. For example, in the USA a company cannot be an inventor; a flesh and blood person is required, and the person who invents must transfer the rights to the company, since the company did not invent the invention and the company wants to be the owner of the patent. Therefore, whether it is an employee of the company or a person outside the company who is doing a transaction with it, an agreement for the transfer of rights must be prepared.

An Attorney Prepares an Agreement for the Transfer of Patent Rights in Israel
In Israel, if you wish to transfer rights in a patent registration application or in a patent, an agreement for the transfer of rights must be submitted. A request for the transfer of rights must be filed under Section 169 of the Patents Law. A fee payment must be attached to the request; many actions at the Patent Office require the payment of a fee, which is usually relatively low.
For example, John filed a patent in his own name by virtue of being the inventor, and later wishes to make a deal with a company. Sometimes more than one agreement needs to be prepared.

Attorney for Patent / Commercial / Employment Agreements

Sometimes our firm prepares more than one ownership transfer agreement for a single file for a client. An ownership transfer agreement submitted to the Patent Office does not address the commercial side, i.e. what the inventor receives from an investor or a company purchasing the patent. It is therefore important to prepare, in addition to the ownership transfer agreement, a commercial agreement between the owner of the invention, for example by virtue of being the inventor, and the investing party that wishes to become the owner of the patent.
These agreements complement each other. The ownership transfer agreement is submitted to the Patent Office or to patent offices around the world, and in many cases the inventor and the company do not want, nor are they required, to let the entire public know what the inventor received or what a certain company gave the inventor. It is therefore customary to prepare two agreements, one for the transfer of ownership and the other a commercial agreement setting out the consideration paid by the new owner to the transferor of the right.
Another important agreement is the employment agreement. Within the employment agreement, where there is an employer employee relationship, it is very important that the employment agreement address intellectual property rights and their ownership. Even if there is an employment agreement that lacks this section, it is very important for many employers to add this component in order to supplement the provisions of the law by virtue of contract.

An Opinion Before Importing a Product, by a Patent Lawyer / Patent Attorneys

Sometimes companies approach us that do not wish to register a patent but want to import a product. If there is a patent in Israel on the same imported product, the importer may be sued for patent infringement. It is possible to provide an opinion on patent infringement based on existing publications, but it is important to know that the opinion is not always black or white. In patents there are many borderline cases in which the court has discretion as to whether or not there is infringement. Certainly, sometimes the answer is unequivocal that there is infringement or that there is no infringement, but it must always be remembered that the presiding judge may rule differently from the position in the opinion.

Trademark Registration by a Patent Lawyer and Its Importance

Registration of trademarks by a patent lawyer or patent attorneys is important in order to protect the name and goodwill of a product, i.e. goods, or of a company. A trademark can be registered for a logo, a name or a combination of them, as well as for colors, sounds and more. Registration is important, but with trademarks it is important to protect the protected name after registration as well. Our firm sends a warning letter to infringers of the mark, and if the alleged infringer does not stop the use and pay compensation for the damage caused, an infringement claim can be filed in court to enforce the applicant’s intellectual property right.

Accelerating a Patent Application by a Patent Attorney / Attorney

In a patent application, it is possible in many cases to accelerate the examination process. A request for acceleration, or in the language of the law, a request for expedited examination, can be filed when the application is filed or after the application is filed. A patent attorney or a lawyer who practices in the field of patents can file this request. The Patents Law lists several options and grounds for filing a request for acceleration. Each case must be examined on its merits, and it is advisable to consult a patent attorney or lawyer as to whether a request for acceleration can be filed with the application or after the application is filed, if it is a patent application that has already been filed.
For example, if a patent application has already been filed without an acceleration procedure, an applicant who has reasonable grounds may submit a reasoned request to the Registrar, accompanied by an affidavit supporting the facts, which is signed before a lawyer. The Patents Law lists possible grounds, for example, a notice from the Registrar regarding the possibility of advancing the examination due to the examination of a parallel application; another person has begun to exploit the invention claimed in the patent application without the patent applicant’s permission, or there is a basis for concern that he will do so; the advanced age or medical condition of the applicant; the public interest; and other reasons.
Before filing a request for acceleration, it is advisable to consult a patent lawyer or a patent attorney who will explain to the inventor the meaning, advantages and disadvantages of the acceleration request procedure.

An Application under the PPH by a Patent Attorney / Attorney

Sometimes it is possible to use the PPH (Patent Prosecution Highway) agreement, which allows a request to advance examination by virtue of another examination. Our firm files requests under the PPH, which allows the inventor to receive a fast response to a patent application filed on the basis of an examination received in another country. For example, a patent was granted in Israel and a patent was then filed in the USA or Germany; it is possible to ask the US or German patent office to carry out the examination in an accelerated procedure, since Israel has signed an agreement with these countries under which, if a patent has been granted in Israel, the examination outside of Israel can be accelerated in countries that have signed the agreement with Israel, and vice versa, examination in Israel can be accelerated on the basis of a patent granted outside of Israel. It is important to consult a patent lawyer or a patent attorney on this matter for each specific case; sometimes it is preferable not to file a request under this agreement in light of various considerations regarding the scope of protection and other strategic considerations.

An Application under Section 17C after Consulting a Patent Attorney

Section 17C of the Patents Law is an important section that should sometimes be used wisely. Section 17C of the Israeli Patents Law allows an applicant for a patent in Israel to ask an Israeli examiner to grant a patent on the basis of an examination carried out, for example, by a US patent examiner.
For this purpose, the claims of the parallel application on which a patent was granted must be identical to the claims in Israel. In other words, the patent attorney needs to file an appropriate request and amend the wording of the patent claims to the wording under which the patent was granted in the USA. However, attention is required: it is not always recommended to use Section 17C of the Patents Law, and sometimes it is preferable not to use this section for reasons of scope of protection or patent registration strategy. It is therefore very important to consult a patent attorney or lawyer in each specific case.

Our Firm Supports Inventors and Companies from the Idea Stage through the Various Stages

Our firm, through its lawyers and patent attorneys, provides services from the idea stage. We support inventors and companies before and after the registration of a patent, a design or a trademark, in various proceedings in which it is important to have the legal support of a lawyer. For example, we can join meetings in Israel and abroad accompanying the presentation of an invention to potential entities, while preparing non disclosure and non competition agreements, collaboration agreements, founders’ agreements, agreements with subcontractors and service providers, company formation and more.

Patent Attorneys: Who Decides Whether a Patent is Granted?

Our patent attorneys draft the patent application specification. Patent attorneys do not grant patents. A patent application is filed with the Israel Patent Office or with the patent authorities in the various countries, for example in the USA, China, European countries, etc. After the patent is filed, it first undergoes a procedural check to ensure that it meets the threshold conditions for receiving confirmation of the patent filing. Subsequently, the application will be examined according to the type of proceeding filed, whether as a regular application or as a request for expedited examination, i.e. acceleration, a green application, etc. These will affect the date on which a response is received from the Patent Office, i.e. an examination report.
Most patents do not pass the first examination, and patent attorneys have several rounds of examination reports with the patent examiners at the authorities, who are the ones that carry out the examination of the application for most examined patents.

Patent Attorneys and Responses to Examination Reports

Once the patent application meets the examiner’s position under the Patents Law, for example after 2 examination reports to which the patent attorneys responded, and the examiner decides to issue a notice before acceptance, an acceptance fee is paid. If there are no oppositions from the public to the grant of a patent, a patent certificate will be issued.

Patent Attorneys: An Application to the Court in the Event of a Refusal

There are cases in which the examiner refuses to grant a patent. If the patent attorneys decide that the refusal of the patent is not justified, they can file a request with the Registrar of Patents, before the Registrar of Patents’ tribunal, to re-examine the application and, despite the examiner’s refusal, grant a patent. If the Registrar sees that a mistake was indeed made and that it is possible and just to grant a patent, he will approve the patent right.
If the Registrar decides not to grant a patent, it is still possible to file an appeal as of right against the Registrar’s decision before the District Court, and if the District Court does not grant it, it is also possible to file a request for leave to appeal to the Supreme Court.
These cases are very exceptional, and most patent examinations are accepted by the patent examiners themselves, who are usually engineers in the field of the invention.

Patent Attorneys and Patent Drafting: What is a Patent?

Patent attorneys draft a patent application. If a patent is granted, the owner of the invention has a monopoly right to the invention. The patent application is accompanied by drawings and a legal wording that contains, at its end, a section called the claims.
A patent is granted for the invention defined in the claims, which define the scope of protection of the invention. Section 3 of the Patents Law defines what a patentable invention is: “An invention, whether a product or a process in any field of technology, which is new, useful, can be applied industrially and involves an inventive step – is a patentable invention.”

Patent Attorneys: From an Idea to an Invention, Concept and Drafting

Patent attorneys, from the idea stage, can help the inventor determine whether the idea can be turned into an invention. A patent is not registered for an idea, but is filed for an invention. An invention, if it is new and involves an inventive step, may mature into a registered patent.
A patent attorney, once there is an invention, can define the wording by drafting a patent application. The scope of protection that a patent attorney drafts when preparing a patent for an invention will be defined in the section called the claims. This section is the one that must be infringed in order to harm the patent holder’s intellectual property rights of the patent type.
In other words, from the idea stage we move on to the invention and concept stage, and then to the drafting, which will be filed as a patent application in Israel or in another country outside of Israel, for example the USA and many other countries.

Patent Attorneys: Filing a Patent

The patent is filed once there is a wording, called the specification, together with a drawings section, which shows the invention visually so that the patent examiner, in addition to the text, will also see things in a drawing. However, it is important to remember that the drawing is conceptual only and shows the concept; it does not go into the details of implementing the invention, and these are not engineering drawings of a product or process.
Sometimes, at later stages, a prototype is developed, and sometimes it is possible to update an existing patent application or file an additional new patent application, broaden the scope of protection and seek protection for new solutions that arose during the development and production of the prototype.

Patent Attorneys and Patent Lawyers

Lawyers and patent attorneys sometimes perform different work. A patent attorney does not have the powers of a patent lawyer. A patent attorney can represent clients only before the Patent Office, whereas a lawyer can represent clients before the Patent Office as well as before the court in infringement claims and more. Moreover, a lawyer can prepare agreements for inventors and patent holders, for example various agreements between partners, with suppliers and with customers, including unique non disclosure agreements that are sometimes necessary, and more.
Patent attorneys and lawyers are licensed by the country in which they received their license after study, internship and examination: lawyers by the Israel Bar Association and patent attorneys by the Israel Patent Office. The license is renewed once a year.

Patent Attorney: How Long is a Drafted Patent?

The length of a patent application varies from invention to invention and according to different fields. The application includes the specification, to which drawings must be attached. The specification can range from several pages to hundreds of pages; there are applications of 7 to 8 pages and there are applications of 70 to 80 pages, depending on the complexity and on what needs to be defined in the claims.
For the same invention it is possible to request 2 to 3 claims or 20 to 30 claims and more. Each claim defines a different or additional component of the invention, and the more claims are approved, the greater and broader the scope of protection of the invention will be. However, it should be remembered that the larger the work, the higher the budget for drafting the application and the fees may be.
For example, in the USA, above 20 claims the authority will charge a higher fee; in some countries this applies above 7 or 15 claims, and in some countries a higher fee is charged only above 50 claims.
It is therefore advisable to know the target countries in which applications are about to be filed, and to draft the specification and the claims so that the number of claims does not exceed the threshold for an additional fee, which can sometimes be very significant.

Associate Patent Attorneys Outside of Israel

Filing patents outside of Israel requires working with local associates in the various target countries. Our firm has a network of associates in dozens of countries, who translate the specification into the local language, for example into Chinese, Japanese, etc., and file the application according to the procedure, law and regulations of the target country chosen by the patent owner.
Our firm also serves as the representative office for clients from abroad who file patents in Israel. Our colleagues abroad approach us and ask us to file applications in Israel on their behalf, for the clients they represent, private inventors and large companies in diverse fields. For example, our firm represents giant transportation and automotive companies from abroad in proceedings before the Israel Patent Office, in designs and trademarks, both in registration and in oppositions and various proceedings.

Designs and Patents by a Patent Attorney or Attorney

Until quite recently, the Patent Office would approve designs for hundreds and perhaps thousands of profiles of “Klil” and others.
This was despite the fact that a profile is dictated by its function.
Indeed, this limitation can be overcome if not the entire shape is dictated by the function. The legal source for this is:
Civil Appeal 430/67 Sharnoa Ltd. and Saran United Factories Ltd. (in liquidation) v. Tnuva Merkaz, 22 (1) 113, pp. 115-116, given on 29.01.1968: “The special shape must have some features beyond those required to enable the object to fulfill its special purpose; but the fact that some advantage is derived from giving a special shape does not disqualify the shape from registration as a design.” An auxiliary test for determining whether the shape is entirely dictated by functional considerations is the existence of other shapes that achieve the same utilitarian purpose. Parts whose shape is entirely dictated by the need to fit into other parts (such as spare parts) are considered functional and therefore cannot be registered as a design (Registrar’s decision regarding design registration applications 44701 et al., A. Patia, of 9.12.2010).

A patent seeks protection for a function, and a design application seeks protection for the design of the shape. For example, an attorney or patent attorney may sometimes recommend filing both a patent and a design,
covering both the function and the patent. An attorney or patent attorney can sometimes draft a patent and file a design, or sometimes only one of them may be filed, as appropriate.

As we have prepared the reader, quite recently the Patent Office changed its policy, and since then it has been rejecting applications on the grounds that the profile is dictated by the function.
What happened?
The Patent Office justified this by the enactment of the “Designs Law”, which replaced the “Patents and Designs Ordinance”.
There is no truth behind this, since the differences between the Designs Law and the Designs Ordinance are not in this aspect.
After all, the Designs Law did not overturn Civil Appeal 430/67,
and the Patent Office’s work instructions include the ruling of Civil Appeal 430/67.
The truth is that the change in legislation is merely an excuse to justify the Patent Office’s mistake in approving thousands of profiles.
However, in changing its policy, the Patent Office swung to the opposite extreme, to the point of refusing to truly apply Civil Appeal 430/67.
In other words, since the policy change, the Patent Office has been sweepingly rejecting the existence of a design component separate from the function, for example in design number 63571.
Despite the above, it is still possible, with difficulty, to obtain protection for profiles.
We have now received approval for design number 69819, but not through the ruling of Civil Appeal 430/67.
Rather, when filing the design application, we guided the owner regarding the design effect, and we also emphasized it to the Patent Office in the application, and later in the response to the examination report.
In short: the Patent Office refuses to apply Civil Appeal 430/67, but recognizes a design if the design effect is noticeable to the user’s eye.

It is advisable to consult a patent attorney or lawyer on this matter and to examine and consider how to file an application for a design or a patent, or for a design and a patent.

Patent Attorneys in the USA and Israel

Our firm has a network of associate patent attorneys in dozens of countries. We file patent applications for applicants in many countries through a team of professional consultants with local licenses, for example in the USA, China, Japan, European countries, Australia, Russia and many other countries. Our associates receive the application draft from our patent attorney, translate the application into the local language, for example Chinese or Japanese, and file the application.
Patent practitioners in the USA hold different licenses. For example, there are patent agents, who are licensed for certain actions such as filing a US patent, called a Utility patent, or filing a design, called a Design patent, but who do not, for example, handle the filing of trademarks. The professionals who file trademarks are patent attorneys. Our firm has associate consultants with local licenses who can file patents and designs as well as trademarks, and we also have associates who handle patent infringements in the courts of various countries.

In Israel, patent attorneys and lawyers are authorized to practice intellectual property law, including patents, designs and trademarks, but patent attorneys cannot represent clients and sue in court, for example for patent infringement. Our firm has lawyers and patent attorneys, and some of our lawyers are also patent attorneys.